Playboy Enterprises International, Inc. v. Universal Internet Technologies, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Playboy Enterprises International, Inc. v. Universal Internet

Technologies, Inc.

Case No. D2001-0811

1. The Parties

The Complainant is Playboy Enterprises International, Inc., of 680 North Lake

Shore Drive, Chicago, Illinois 60611, United States of America, represented

by Suzanne V. Wilson, Esq. and Carol Lally, Esq. of Arnold & Porter,

Los Angeles, California, USA.

The Respondent is Universal Internet Technologies, Inc., Global Gaming Systems

and Licensing, European Division, Bloomsbury, London, England WC1E 7QF, United

Kingdom.

2. The Domain Names and Registrar

The disputed domain names in this proceeding are <playboysportbooks.com>,

<playboysportbook.com>, <playboyssportsbook.com> and <playboyssportsbook.net>.

The Registrar is Tucows, Inc., of Toronto, Ontario, Canada.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint, which specified two of the disputed domain names, namely <playboysportbooks.com>

and <playboysportbook.com>, was received by the Center by email on June

20, 2001, and in hardcopy on June 21, 2001. The Complaint was acknowledged on

June 21, 2001. Next day registration details were sought from the Registrar.

On June 22 and June 28, 2001, the Registrar confirmed that the disputed domain

names are registered in the name of the Respondent at the address mentioned

above and that section 7 of the Registrar’s Registration Agreement incorporates

the Policy.

On June 26, 2001, by email and on June 29, 2001, in hardcopy, the Complainant

filed an amended Complaint, which specified all four disputed domain names.

On July 2, 2001, the Center satisfied itself that the amended Complaint

complied with all formal requirements (including payment of the prescribed fee)

and formally dispatched copies of the amended Complaint by post/courier (with

enclosures) to the Respondent at its address as recorded with the Registrar

and by email (without attachments). The Center also included with the material

dispatched to the Respondent a letter dated July 2, 2001, containing notification

of the commencement of this administrative proceeding and sent copies to the

Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was July 21, 2001. No Response

was filed within the time specified by the Rules. On July 26, 2001, the Center

gave formal notice of the Respondent’s default.

On August 24, 2001, by virtue of the Complainant having sought the appointment

of a three-member panel, the Center notified the parties of the appointment

of the undersigned to serve as panelists, each having submitted a Statement

of Acceptance and Declaration of Impartiality and Independence. That day, the

Center transmitted the case file to the panel and notified the parties of the

projected decision date of September 7, 2001.

The panel is satisfied that the amended Complaint was filed in accordance with

the requirements of the Rules and Supplemental Rules; payment was properly made;

the panel agrees with the Center’s assessment concerning the amended Complaint’s

compliance with the formal requirements; the Center discharged its responsibility

under paragraph 2(a) of the Rules to employ reasonably available means calculated

to achieve actual notice to the Respondent of the amended Complaint; no Response

was filed within the time prescribed by the Rules and the administrative panel

was properly constituted.

The language of the proceedings was English.

4. Factual Background

The Complainant is a global media entertainment company, providing adult lifestyle

entertainment through a wide variety of media, including print, cable television,

videotape and the Internet. It entered the gaming industry when it opened a

casino in 1966.

First registered in the United States in 1954 and in the United Kingdom in

1962, the Complainant’s PLAYBOY trademark is internationally famous [1].

The Complainant also has common law rights, through use, in the trademark PLAYBOY

SPORTSBOOK.COM and is the registrant of that domain name, which it uses in connection

with on-line sports wagering activities.

The Complainant’s websites, including <www.playboy.com>, <www.playboysportsbook.com>,

and <www.playboysportsbook.co.uk>, promote fixed odds sports wagering

and other entertainment services provided under the PLAYBOY SPORTSBOOK.COM mark.

On February 15, 2001, the Complainant announced its intent to operate,

with Ladbrokes eGaming Ltd. in London, an on-line sports wagering website at

<www.playboysportsbook.com>.

On February 21, 2001, the Respondent registered the domain names <playboyssportsbook.com>

and <playboyssportsbook.net>. On March 11, 2001, the Respondent registered

the domain names <playboysportbooks.com> and <playboysportbook.com>.

The web addresses corresponding to the disputed domain names resolve to a website

which appears to offer on-line wagering services. They frame a page from the

website <www.worldwager.net> and then redirect the user to the <www.worldwager.net>

website, which is currently registered to the Respondent.

According to the Complainant the registration for the disputed domain names

contains incomplete information. There is no registered legal entity called

"Universal Internet Technologies, Inc." in the United Kingdom. Indeed

the names of United Kingdom companies do not end in Inc but rather Limited,

Plc or some variation of those designations. The Bloomsbury address is incomplete

since it does not contain all the information including a street number and

name that a complete address in central London would contain.

5. Parties’ Contentions

A. Complainant (omitting many citations)

Identity or confusing similarity

The disputed domain names are identical to the Complainant’s trademark PLAYBOY

SPORTSBOOK.COM. They also are identical to the Complainant’s website address

<www.playboysportsbook.com>. The disputed domain names are also confusingly

similar to the Complainant’s famous mark PLAYBOY. Thus, they are identical or

at the very least confusingly similar to the Complainant Marks.

Further, consumers expect to find a company on the Internet at a domain name

address comprised of the company’s name or marks. This is all the more so when,

as here, the Complainant uses the Internet to market or sell its goods and services.

Because PLAYBOY SPORTSBOOK.COM is the trademark and <playboysportsbook.com>

is the domain name for the Complainant’s on-line sports wagering services and

entertainment, consumers would expect to find a Complainant website at a site

accessed by means of any of the disputed domain names. The Respondent’s registration

of the disputed domain names and use of those domain names in connection with

competitive on-line sports wagering websites causes or is likely to cause consumer

confusion.

Legitimacy

The Respondent has no connection or affiliation with the Complainant and has

not received any license or consent, express or implied, to use the Complainant’s

marks in a domain name or in any other manner.

The Respondent has not used the disputed domain names in connection with a

bona fide offering of goods or services. The Respondent does not have

trademark registrations for "playboysportbooks," "playboysportbook,"

"playboyssportsbook.com," or "playboyssportsbook.net" and

could not obtain registrations because the Complainant’s marks belong and are

registered to the Complainant. While it appears that the Respondent may offer

wagering services through the <worldwager.net> website that is framed

by the disputed domain names, the Respondent’s unauthorized provision of information

and competitive services under the Complainant’s mark is not a bona fide

offering of goods and services.

The Respondent has not made a legitimate non-commercial or fair use of the

disputed domain names. There is no evidence that the Respondent, whose purported

corporate name differs from the disputed domain names, is commonly known by

the disputed domain names. Rather, the evidence suggests that the Respondent

registered the disputed domain names with the intent of trading on the reputation

of and goodwill associated with the Complainant.

Bad faith

The Respondent’s misappropriation of the disputed domain names is no accident.

The Respondent registered the disputed domain names less than a month after

the Complainant issued its press release about its on-line sports wagering site

at <www.playboysportsbook.com>. Thus, the Respondent deliberately registered

the disputed domain names with the bad faith intent of profiting from the Complainant

and its famous PLAYBOY marks.

Further, the Respondent has engaged in a pattern of registering domain names

containing third parties’ trademarks. In addition to registering at least four

domain names containing the Complainant marks, the Respondent recently registered

the domain names <abcsportssportswager.com>, <nbcsportswager.com>,

<cbssportswager.com>, and <foxsportswager.com> [2].

The Respondent’s pattern of conduct is evidence of its bad faith registration

of the disputed domain names.

Moreover, the Complainant’s marks are internationally famous. The fame and

reputation of a trademark owner’s mark can demonstrate a respondent’s bad faith

intent in registering a domain name that contains the famous mark.

Given the fame of the Complainant marks, "it is not possible to conceive

of a plausible circumstance in which the Respondent could legitimately use the

[disputed domain names]. It is also not possible to conceive of a plausible

situation in which the Respondent would have been unaware of this fact at the

time of registration." [3]

In any event, the Respondent has used the disputed domain names in bad faith

by redirecting them to an active website. This unauthorized use creates a likelihood

of confusion with the Complainant and the Complainant marks. Consumer confusion

is all the more likely because the active website associated with the disputed

domain names has purported to offer the same sort of on-line wagering services

that the Complainant offers at its own website under its identical mark and

domain name.

It is bad faith to register and use a domain name containing a trademark owner’s

mark to offer competitive goods and services.

Even if the Respondent had not used the disputed domain names to host an active

website, however, his actions still constitute registration and use in bad faith.

The Respondent must have expected that any use of the disputed domain names

would cause the Complainant harm. The disputed domain names contain marks that

are so "obviously indicative" of the trademark owner that the Respondent’s

use of the domain name would "inevitably lead to confusion of some sort."[4]

Indeed, the fact that the Respondent provided the registrar with incomplete

information in its registration applications confirms that the Respondent must

have expected that its registration and use of the disputed domain names would

harm the Complainant. At the very least, the WhoIs records for the disputed

domain names contain an incomplete address and a company name that does not

correspond to a registered legal entity in the United Kingdom. Providing incomplete

or false information to the registrar is compelling evidence of bad faith registration

and use [5].

B. The Respondent

No Response was filed.

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the panel must decide this complaint on

the basis of the statements and documents submitted and in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the disputed domain name has been registered and is being used in bad

faith.

Failure to file a Response permits the panel to infer that the Respondent does

not deny the facts which the Complainant asserts nor the conclusions which the

Complainant asserts can be drawn from those facts" [6].

Identity or confusing similarity

Essential or virtual identity is sufficient for the purposes of the Policy

[7]. The test of confusing similarity under the Policy, unlike

trademark infringement or unfair competition cases, can, though need not always,

be confined to a consideration of the disputed domain name and the trademark

[8].

Here each disputed domain name incorporates, as its most prominent feature,

the whole of the Complainant’s famous trademark PLAYBOY, together with the descriptive

words SPORTS and BOOK, neither of which does anything to detract from the immediate

association with the Complainant aroused by the word PLAYBOY. The content of

the Respondent’s website does nothing to dissuade visitors from the misrepresentations

conveyed by the disputed domain names that they are associated with the Complainant,

having regard to the fame of the PLAYBOY mark and the Complainant’s activities

in the gaming field.

The panel finds the disputed domain names are identical to the Complainant’s

common law trademark PLAYBOY SPORTSBOOK.COM and confusingly similar to the Complainant’s

famous registered trademark PLAYBOY. The Complainant has established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademarks nor

to register the disputed domain names. The Respondent is not known by any of

the disputed domain names. The Respondent cannot have been unaware of the renown

of the PLAYBOY mark when it registered the disputed domain names [9].

It is thus apparent that the Respondent’s site has been designed to attract

Internet users because of the renown of the PLAYBOY mark. The Respondent is

trading off the Complainant’s goodwill in so doing and is not offering bona

fide services [10]. The use of slight

mis-spellings of well-known trademarks to attract Internet traffic has been

held by other panels to negate bona fides and to demonstrate lack of

any legitimate interest in the domain name [11].

The panel finds the Complainant has established this element. The Respondent

has no rights or legitimate interest in the disputed domain names.

Bad faith registration and use

A finding of bad faith may be made where the Respondent "knew or should

have known" of the registration and use of the trademark prior to registering

the domain name [12]. The panel has found

that the Respondent must have known of the PLAYBOY mark before it registered

the domain names. The timing of the registrations so soon after the announcement

of the Complainant’s intention to operate an on-line sports wagering website

at <www.playboysportsbook.com> indicates that the Respondent knew of that

announcement, and hence of the PLAYBOY SPORTSBOOK.COM mark, at the time of those

domain name registrations.

The Panel draws the inference that the Respondent, by registering the disputed

domain names so soon after the Complainant’s announcement, intended to prevent

the Complainant from reflecting its PLAYBOY SPORTSBOOK.COM mark in a corresponding

domain name. Under paragraph 4(b)(ii) of the Policy, this is evidence of both

bad faith registration and bad faith use, provided there is a pattern of such

conduct. The Respondent has exhibited a pattern of such conduct by registering

other domain names incorporating the well-known trademarks of others. Similar

cases have been held to be classic cases of cybersquatting

[13].

The Panel also infers from the circumstances just mentioned that the disputed

domain names were registered primarily for the purpose of disrupting the business

of the Complainant, a competitor of the Respondent. This is evidence of both

bad faith registration and bad faith use under paragraph 4(b)(iii) of the Policy.

By intentionally diverting Internet users from what they expect to be the Complainant’s

site to the Respondent’s competing site, the Respondent allows those users to

infer a relationship between the Complainant and the Respondent that does not

exist. This is evidence of both bad faith registration and bad faith use under

paragraph 4(b)(iv) of the Policy.

The furnishing of false or incomplete contact information to the Registrar

is also prima facie evidence of bad faith registration and use.

The Complainant has established this element.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs

that the domain names <playboysportbooks.com>, <playboysportbook.com>,

<playboyssportsbook.com> and <playboyssportsbook.net> be transferred

to the Complainant.

Alan L. Limbury

Presiding Panelist

Peter L. Michaelson, Esq.

Panelist

Clive Thorne, Esq.

Panelist

Dated: September 1, 2001

Footnotes:

1. The distinctiveness, strength and fame

of the PLAYBOY mark has been acknowledged by a number of courts. See, e.g.,

Playboy Enters., Inc. v. Baccarat Clothing Co, Inc., 692 F.2d 1272 (9th

Cir. 1982) (PLAYBOY trademark is distinctive, strong and has acquired great

fame); and Playboy Enters., Inc. v. AsiaFocus Int’l, Inc., 1998 WL 724000

(E.D.Va. Apr. 10, 1998) (noting that fame of PLAYBOY mark is beyond dispute).

2. See ABC Sports, NAF Case No. 95840

(granting ABC Sports’ request to transfer the domain name containing its trademark).

3. See Telstra Corporation Limited v.

Nuclear Marshmallows, WIPO Case

No. D2000-0003 at § 7.7.

4. AT&T Corp. v. Fred Rice, WIPO

Case No. D2000-1276 at § 6 (November 25, 2000). "Nobody

registers domain names for no purpose. . . . [T]he Respondent either registered

them in order to sell them to the Complainant hoping that the Complainant would

offer a large sum of money for them or he registered them in order to use them

to connect to an internet facility." Id.; see also eBayInc. v.

Sunho Houg, WIPO Case No. D2000-1633

at § 6 (use of complainant’s entire mark in disputed domain names makes it difficult

to infer a legitimate use).

5. See, e.g., Ticketmaster Corp. v. Dmitri

Penn, WIPO Case No. D2000-1550 at

§ 6 (Jan. 16, 2001) (absence of complete or correct information in the application

for registration suggests a desire to create a covert position and make communication

difficult and constitutes bad faith); Cabletron Systems, Inc. v. DSL Enters.,

WIPO Case No. D2000-0571 at § 6 (Aug.

18, 2000) (providing false telephone number, e-mail address and identities to

the Complainant and the registrar is an act of bad faith); Quixtar Investments,

Inc. v. Scott A. Smithberger, et al., WIPO

Case No. D2000-0138 at § 6 (Aug. 1, 2000) (use of false registration information

to hide true identity is evidence of bad faith registration and use).

6. Rule 14(b) and see Reuters Limited

v. Global Net 2000, Inc. (WIPO Case No.

D2000-0441): Hewlett-Packard Company v. Full System S.a.S. (NAF Case

No. FA0094637); David G. Cook v. This Domain is For Sale (NAF Case No.

FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge

(NAF Case No. FA0094925).

7. See The Stanley Works and Stanley Logistics,

Inc v. Camp Creek. Co., Inc. (WIPO Case

No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation

v. S&S Enterprises Ltd. (WIPO Case

No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC

(WIPO Case No. D2000-0102). For a typical

US case see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d

489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s"

and the domain name <sportys.com> – specifically, an apostrophe in the

trademark and the addition of .com in the domain name – are "inconsequential,"

such that the domain name is "indistinguishable" from and "certainly

‘confusingly similar’ to the protected mark").

8. AltaVista Company v. S.M.A., Inc.

(WIPO Case No. D2000-0927); Gateway,

Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO

Case No. D2000-0109); America Online Inc. v. Anson Chan (WIPO

Case No. D2001-0004) Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol

(WIPO Case No. D2001-0491) and Playboy Enterprises

International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa (WIPO

Case No. D2001-0745).

9. For a similar case see A.P. Møller

v. Web Society (WIPO case No. D2000-0135).

10. Madonna Ciccone, p/k/a Madonna v.

Dan Parisi and "Madonna.com" (WIPO

case No. D2000-0847).

11. See for example Cimcities, LLC v.

John Zuccarini D/B/A Cupcake Patrol (WIPO Case

No. D2001-0491) Disney Enterprises, Inc. v. John Zuccarini, Cupcake City

and Cupcake Patrol (WIPO Case No. D2001-0489)

and Guerlain S.A. v. Peikang, WIPO

Case No. D2000-0055.

12. SportSoft Golf, Inc. v. Hale Irwin’s

Golfers’ Passport (NAF Case No. FA0094956). Likewise Marriott International,

Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc.

v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring

L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).

13. Sanrio Company, Ltd and Sanrio,

Inc. v. Neric Lau, (WIPO case No. D2000-0172)

and Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO

case No. D2000-0113); Sony Kabushiki Kaisha (also trading as Sony Corporation)

v. Inja, Kil (WIPO case No. D2000-1409)

and Warner Lambert Export Limited v. Mr Darren Darcy (WIPO

case No. D2000-0453).

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